USPTO Patents Application 09929260

The opinion in support of the decision being entered today
is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES

Ex parte BENJAMIN MANDLER and ROMAN TALYANSKY

Appeal 2007-1502
Application 09/929,260
Technology Center 2100

Decided: November 2, 2007

Before LANCE LEONARD BARRY, HOWARD B. BLANKENSHIP,
and MAHSHID D. SAADAT, Administrative Patent Judges .

BARRY, Administrative Patent Judge.

DECISION ON APPEAL

I. STATEMENT OF THE CASE
A Patent Examiner rejected claims 67, 68, 76-80, and 88-90.
Benjamin Mandler and Roman Talyansky ("the Appellants") appeal
therefrom under 35 U.S.C. § 134(a). We have jurisdiction under 35 U.S.C.
§ 6(b).

Appeal 2007-1502
Application 09/929,260

A. Invention

The invention at issue on appeal is a semantically based file system.
(Specification f 0002.) According to the Appellants, hierarchical systems of
organizing documents fail to meet the needs of computer users attempting to
access vast amounts of changing data. In providing component names for a
user, they add, conventional file systems attach no semantic significance to
the identified names. {Id. ^ 0003.) In contrast, their invention encodes
semantic information in the names of virtual directories. {Id. \ 0002.)

B. Illustrative Claim
Claim 67, which further illustrates the invention, follows.

67. A computer implemented information retrieval system for
returning a semantically dependent directory structure of files to
a user, comprising:

a file system engine, that receives a file request via a file
system application programming interface, wherein said file
request specifies a file content of memorized files;

a parser, linked to said file system engine, that retrieves
structural information of documents, said parser further
retrieving at least one of elements, attributes and respective
values thereof from said documents;

an indexer, linked to said parser, for constructing an
inverted index of said elements and said attributes and said
respective values thereof,

wherein responsive to said file request, said file system
engine retrieves postings of said inverted index that satisfy
requirements of said file request, and returns a hierarchical tree
of directories to said user; and

wherein said file system engine returns a special virtual
directory in each of said directories, wherein a content of said

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Application 09/929,260

special virtual directory comprises at least one level of said
hierarchical tree, said one level being more deeply nested than a
level of said special virtual directory in said hierarchical tree.

C. Rejection

Claims 67, 68, 76-80, and 88-90 stand rejected under 35 U.S.C.
§ 102(e) as anticipated by U.S. Patent Application Pub. No. 2001/0049675
("the Publication").

II. ISSUE

"Rather than reiterate the positions of parties in toto, we focus on the
issue therebetween." Ex Parte Filatov, No. 2006-1 160, 2007 WL 1317144,
at *2 (BPAI 2007). The Examiner finds that claims 67, 68, 76-80, and 88-90
read on Figure 8 and claims 19, 20, 23, and 24 of the Publication. (Answer
3-5.) The Appellants "present[ ] no arguments pertaining to the content of
the . . . Publication or its application to the claims." (Id. 9) Instead they
argue that "the same inventor was the source of both the claimed subject
matter in the present application and the cited subject matter in the prior art.
. . ." (Reply Br. 1.) In support thereof, they submit three declarations, which
the Examiner labels "Declaration A," "Declaration B," and "Declaration C."
(Answer 5.) Therefore, the issue is whether the Appellants' Declarations
establish that Benjamin Mandler ("Mandler") invented both the subject
matter of claims 67, 68, 76-80, and 88-90 and the relied-on disclosure of the
Publication.

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Application 09/929,260

III. FINDINGS OF FACT

1. The Publication names the following inventors: Benjamin Mandler,
Yoelle Maarek-Smadja, Alain Azagury, and Michael Factor.

2. All of these inventors declare, "Mandler was the sole inventor of all
the subject matter that was cited by Examiner in Fig. 8 and in claims 19, 20,
22 and 23 of the Publication." (Decl. B 1 2.)

3. Mandler and Roman Talyansky ("Talyansky") are the applicants for
U.S. Patent Application No. 09/929,260, the application from which the
instant appeal arises.

4. Both of these Applicants declare, "Mandler was the sole inventor of
claims 67, 68, 76-80 and 88-90 in the aforesaid Application." (Decl. C If 2.)

IV. ANALYSIS

The aforementioned Declarations establish that Mandler invented both
the subject matter of claims 67, 68, 76-80, and 88-90 and the relied-on
disclosure of the Publication. We are unpersuaded by the Examiner's
allegation that because "Talyansky claimed inventorship on dependent
claims that incorporate the subject matter of independent claims, his
contribution to the independent claims cannot be fully ruled out." (Answer
7.) Talyansky unequivocally avers that Mandler was the sole inventor of the
claims on appeal. (FOF4.) That Talyansky and Mandler jointly invented

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the subject matter of other claims (Decl. C ^ 3), does not contradict that
averment.

V. ORDER

Therefore, we reverse the rejection of claims 67, 68, 76-80, and 88-90
under § 102(e).

REVERSED

KIS

BROWDY AND NEIMARK, P.L.L.C.
624 NINTH STREET, N.W.
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WASHINGTON, DC 20001-5303

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